1. Best practices in the PCT international phase Session 1

2. Preparing to file (1) Decision-making process
Leave enough time before end of priority period
Have a clear decision-making structure in place
Paris or PCT?
Avoid last-day and even more so last-minute filings
State-of-the-art docketing system in place
Two independent systems
Second pair of eyes review
Review need for any foreign filing licenses

3. Preparing to file (2) Choice of RO? What choices are available?
Reasons not to use your home Office
Advantages/disadvantages in using RO/IB
Right to file with RO of choice
Know your RO
filing methods available
payment methods
closing dates
languages accepted

4. Preparing to file (3) Choice of ISA?
Whether and what choices you have depends on RO
What choices would you have if you use RO/IB?
If you have a choice, which factors to consider?
Search fee amount
Timeliness
Effect on national/regional phase
Quality of reports
PCT-PPH benefits
Excluded subject matter
Languages searched
National phase fee reductions

5. Preparing to file (4) Right to file
Assignments need to have been made before filing
Right to claim priority at the international filing date
Accession number for deposited biological material

6. Preparing to file (5) Choice of filing method: electronic beats paper
Ensure that your filing software is fully up-to-date (or use ePCT filing or similar web-based systems if you can…)
Give all your electronic files clear and distinctive names
Double-check that the correct files have been attached
Check for possible conversion errors
Always submit pre-converted files if accepted by RO
Electronic signature requirements

7. Preparing to file (6) Preparing the request form:
Naming of the applicants:
Impact of US AIA
Always include one applicant who has the right to file an international application
Check correct spelling of names
Addresses of inventor/applicants
Representation: agent, common representative or address for correspondence?
Exclusion of certain designations? Special situation of DE, JP or KR

8. Preparing to file (7) Preparing the request form (cont.):
Correctly indicate all priority claims
Correctly indicate your sequence listing in check list
Ideally, only file one copy of a sequence listing and in txt.format
Make use of PCT declarations
If you are about to miss the priority period
Always have a plan B ready
Ways to extend the priority period
Request restoration of the priority right

9. After filing (1)
Once filed, view what you have submitted, on the date of submission, through electronic file access systems, if available
If a mistake as been made:
Same day corrections
Incorporation by reference
Not a perfect solution
Diverging practices of Offices

10. After filing (2) Monitor receipt of Forms PCT/RO/105 and PCT/IB/301
Priority documents
Best way: ask RO to prepare and transmit in request form
If not possible, use DAS
If not possible: order paper document

11. PCT Resources/Information
For general questions about the PCT, contact the PCT Information Service at:
Telephone: (+41-22)
Facsimile: (+41-22)